The Korean Patent Act categorizes invention into the following categories: "product invention," "process invention" and "manufacturing method invention." In addition, the Korean Patent Act allows inclusion of product-by-process ("PBP") claims in a patent that comprises mostly of product claims.

However, Supreme Court Decision 2011Hu927 (en banc) issued on January 22, 2015 ("the Decision") is gaining significant attention by holding that the patentability analysis for PBP claims must be conducted based on both the final product and the method steps in a PBP claim. In particular, the Supreme Court held that the patentability analysis for a product obtained from a process (or PBP) cannot be based solely on the claimed manufacturing method (or process) but must also include consideration of the physical structure and/or characteristics of the product obtained from the method. As a result, the patentability analysis (i.e., determination of novelty and non-obviousness) shall be determined by comparing the prior art with such physical structures and/or characteristics of the product obtained by the process.

The Supreme Court's Stance in the Past

It is instructive to understand the Korean Supreme Court's position before the Decision. In the past, the Supreme Court had held that a manufacturing method is not patentable even if it is inventive unless the substance itself is novel or non-obvious. However, the Court allowed interpretation of the claim based on the manufacturing method in exceptional cases where the substance itself is new and it is difficult to adequately describe its structure or composition or where stating the manufacturing method is appropriate to concisely express the structure and characteristics of the substance. (Supreme Court Decision 2004Hu3416, June 29, 2006). This earlier decision recognized the difficulty of describing certain chemical products, where physical and/or chemical characterization is difficult. For example, despite current technology and analytical methods, certain chemical compounds are difficult, if not impossible, to characterize, because the compound can change during the analytical process or exist for a very brief moment in the manufacturing process. Due to these difficulties in analysis, patent applicants typically draft claims describing the product by the process or manufacturing steps utilized to obtain the product.

The Decision

The Decision overruled previous Supreme Court decisions and altered the view of the Supreme Court regarding PBP claims. In particular, special circumstances (i.e., allowing description of the product solely by process or manufacturing steps) no longer apply. As a result, the novelty and non-obviousness analysis for a PBP claim must be conducted by comparing the prior art with the structure and/or characteristics for the product specified in the entire scope of the claim including the manufacturing steps.

In this case, the Decision recognized the patentability (i.e., novelty and non-obviousness) for the manufacturing method (or process) of the polaroid film. However, the Supreme Court held that the non-obviousness of a product invention obtained by a process cannot be automatically recognized based only on the novel and non-obvious manufacturing method (or process).

Summary of the Reasoning

Below is a comparison of the old and new decisions of the Supreme Court.

Click here to view image.

Lessons and Implications

The Decision will have a significant impact on the pharmaceutical and chemical industries where it is common to claim a product based on its manufacturing method. The decision will directly affect patent prosecution, patent infringement litigation, patent invalidation proceedings, and patent scope proceedings in these industries.

First, PBP claims are discouraged. PBP claims should only be utilized if it is not possible to characterize the product. Even if the product can only be described by a manufacturing method, we recommend focusing on the novelty and non-obviousness of the product rather than considering the novelty and non-obviousness of the manufacturing method itself.

Second, we advise caution when exercising patent rights defined by PBP claims in patent infringement litigation. Although there are no current Supreme Court decisions that directly discuss the issue of interpreting the scope of such PBP claims, it is highly probable that the Court will reference the Decision and only allow an infringement theory limited to the product with the structure and characteristics specified by the manufacturing method stated in the claims.

Lastly, in patent invalidation proceedings, it is highly probable that the standard for invalidation of PBP claims will compare the prior art with the structure and characteristics of the product obtained by the claimed manufacturing method without consideration of the actual manufacturing method.